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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`VALVE CORPORATION
`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
`Patent Owner.
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`___________________
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`___________________
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`PATENT OWNER’S SUBMISSION
`RE: PREAMBLE IS LIMITING
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`This submission is made in support of Patent Owner’s position that the
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`preamble of the challenged claims is limiting.
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`Antecedent basis, present here, provides a separate and independent basis to
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`conclude that the preamble is limiting “because it indicates a reliance on both the
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`preamble and claim body to define the claimed invention.” Catalina Marketing
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`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see also
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`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)
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`(identifying antecedent basis in the alternative).
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`Separately, a determination of whether a preamble “breathes life and
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`meaning” into the claim requires “review of the entirety of the patent to gain an
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`understanding of what the inventors actually invented and intended to encompass
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`by the claim.” General Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1361-62 (Fed.
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`Cir. 1999) (limiting claim scope to a particular display rather than all display
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`systems in view of specification’s focus on the prior art problem). Like General
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`Elec., the preamble is limiting here because the inventors sought to solve a
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`particular problem in prior art hand held video game controllers.
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`Schumer v. Lab Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002), cited in
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`the 136/137 Institution Decisions, is inapplicable because the preamble did not
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`provide antecedent basis to any limitations in the body of the claim. Meanwhile,
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`the cases that Patent Owner cited are applicable because, as present here, the
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`preamble did provide antecedent basis to express limitations in the body of the
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`- 1 -
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`claim. Pacing Techs. LLC v. Garmin Intern. Inc., 778 F.3d 1021, 1024 (Fed. Cir.
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`2015)(“user” and “repetitive motion pacing system”); Eaton Corp. v. Rockwell
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`Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)(the “vehicle engine” limitation
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`in the preamble provided antecedent basis to “the engine” in the body).
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`Patent Owner respectfully submits that the Board’s opinion that “the
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`preamble term ‘controller’ is not necessary to understand any limitation in the
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`body of the claim” effectively reads out the positive limitation of “the controller”
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`in the body and is inconsistent with General Elec. Further, the Board’s opinion
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`that “the body of the claim recites a structurally complete device” is respectfully
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`inaccurate because it does not account for the essential structural limitations of
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`“hand held”, “game console” or “video game” in the preamble. See, e.g., Samsung
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`Elects. Co. Ltd. v. IXI IP, LLC, IPR2015-01442, Paper 8 at 9 (PTAB 2015)(“hand
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`held” in preamble limiting); Chevron N. Am., Inc. v. Milwaukee Elec. Tool. Corp.,
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`IPR2015-00595, Paper 24 at 7 (PTAB 2015)(same); VSR Indus., Inc. v. Cole Kepro
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`Int’l, LLC, IPR2015-00182, Paper 33 at 10-11 (PTAB April 28, 2016)(construing
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`“gaming controller”); Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00029,
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`Paper 11 at 9-10 (PTAB 2013) (construing “video controller”); Lindsay Corp. v.
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`Valmont Indus., Inc., IPR2015-01039, Paper 37 at 6-8 (PTAB 2016)(construing
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`“hand held”); Dataquill Ltd. v. Huawei Techs. Co. Ltd., 2015 WL 363994, *4-6
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`(E.D.Tex. 2015) (same).
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`Finally, Petitioner agrees that the preamble is limiting. Paper 36 at 65:11-17.
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`Date: July 10, 2017
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Reg. No. 57,905
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`Yasser El-Gamal
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`Reg. No. 45,339
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`Attorneys for Patent Owner
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`- 3 -
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`SUBMISSION RE: PREAMBLE IS LIMITING RESPONSE was served in its
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`entirety electronically via PTAB E2E to Petitioner’s counsel of record at the
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`following address:
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Date: July 10, 2017
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`- 4 -
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